23 Jul
2019

“We are taking unprecedented action” – exclusive USPTO update on protecting the register

  • Office expands on efforts to protect register beyond representation rules change
  • Building searchable database to detect same image used by multiple applicants
  • Plans to amend the trademark rule concerning specimens of use

Last week, the USPTO’s commissioner for trademarks, Mary Boney Denison, testified at a hearing on ‘Counterfeits and cluttering: emerging threats to the integrity of the trademark system and the impact on American consumers and businesses”. Alongside that testimony, Denison and USPTO director Andrei Iancu, under secretary of commerce for intellectual property and director of the USPTO, have penned an exclusive article for WTR to expand on the “unprecedented action” it is taking to combat improper applicant behaviour before the office.

Guest analysis:

Since the USPTO issued the first US trademark registration in 1870, we have relied primarily on two critical touchpoints to protect the integrity of our trademark system:

  1. Our requirement of use in commerce as a condition to obtain and maintain a trademark registration, and
  2. The good faith of our applicants.

For close to 150 years, these two interrelated elements have performed relatively well to protect our trademark system from improper behaviour and false claims of use. Unfortunately, in the past several years, we have seen a rise in improper behaviour before the USPTO, including fake specimens of use and other false claims of use, unauthorised changes to applications and registrations, as well as other improper activities. We both spoke about these behaviours at the INTA Annual Meeting in Boston in May this year.

We have seen a link between trademark applications that include suspicious specimens of use and the unauthorised practice of law. We have identified instances where hundreds of applications that appear to have been filed by the applicant itself were actually filed by foreign practitioners. Foreign practitioners generally are not permitted to represent applicants in trademark matters before the USPTO.

The USPTO has excluded several unauthorised foreign individuals (who may not even be trademark lawyers or agents in their country of origin) from representing trademark applicants. However, because they are located overseas, we have limited ability to effectively sanction them or to protect foreign trademark applicants from the bad advice they likely are receiving from these individuals.

To respond to both the unauthorised practice of law and the rise in fake or suspicious specimens of use, the USPTO just published a rule (effective 3 August 2019) to require applicants, registrants, or parties to a trademark proceeding whose domicile is not located within the United States or its territories to be represented, in all trademark matters before the USPTO, by an attorney who is licensed to practice law in the United States.

While a significant change for us, the requirement of a local attorney is a feature of many other trademark systems around the world. The requirement of a US licensed attorney will increase the accuracy of the submissions to the USPTO, increase accountability and compliance with US law and regulations, and help to ensure the integrity of the trademark register.

Additionally, within the next nine months, users will need to have a MyUSPTO.gov account and we will be requiring login and proof of identity to file trademark documents at the USPTO.

The USPTO takes very seriously the integrity of the federal trademark register as a reliable reflection of marks in use in commerce. Generally, a trademark is eligible for registration if it is used in commerce in or with the United States. For a mark to be registered, apart from limited exceptions, the applicant must provide an example, called a specimen, which shows how their mark is actually being used in commerce in connection with the goods or services in the application.

The recent surge in suspicious specimens of use is part of a larger problem of mark owners submitting false or inaccurate claims of use. Whether made intentionally or due to misunderstanding or carelessness, a claim in an application or a registration that a mark is in use for particular goods or services, when it actually is not, contributes to a cluttered trademark register and diminishes the register’s utility for businesses and the public.

Unfortunately, there is no silver bullet when it comes to addressing improper behaviour before the USPTO. Therefore, we are taking unprecedented action to address the problems from multiple angles.

The recent US counsel requirement and IT enhancements mentioned above are among the most important components. But we will not stop there. We are also pursuing a number of additional measures, including:

Task Force: We have established a special task force of personnel with policy, examination and IT expertise who are working to identify improper activity and develop responses.

Training: We offered new and advanced specimen training to our examining attorneys in June, with additional training coming in August, on identifying digitally created or altered specimens of use.

Refusing registration when the specimen of use appears suspicious: When an examining attorney identifies a specimen of use that appears to have been digitally altered or mocked-up, the USPTO has updated its guidance to require examining attorneys to refuse registration because the specimen does not show the mark in use in commerce and to request additional information regarding use of the mark (see https://www.uspto.gov/sites/default/files/documents/Exam%20Guide%2003-19.pdf). We believe that requiring applicants whose use claims appear suspicious to provide additional information and proof of actual use will help to improve the accuracy of use claims in examination and make it harder for fraudulent applications to get approved.

Expanding audits of post-registration maintenance filings: To maintain a US trademark registration, the registration owner periodically must file a sworn declaration listing all of the goods and services in the registration for which the mark continues to be in use in commerce and must include a specimen of use for each class. The USPTO randomly audits these filings and asks for additional proof of use, starting with two additional goods or services in each class and then everything in the registration if use of the queried items cannot be substantiated. Over 50% of the audited registrations have deleted at least some goods or services from the registration. We have recently doubled the number of registrations the USPTO audits to 5,000 per year, and have allocated additional staff to the audit programme.

Providing more education on use in commerce: The USPTO’s ongoing post-registration ‘Proof of Use Audit’ programme has demonstrated that 79% of those audited were represented by counsel and, of those audited who had a lawyer, 52% have been required to delete goods or services for which they previously swore the mark was in use. These statistics are troubling to say the least and suggest a lack of care, knowledge of what the law requires, or both, by mark owners and their counsel. To help ensure that mark owners and their counsel understand US use requirements and their mutual obligations under the USPTO’s rules to confirm that the submissions they make to the USPTO are accurate and that claims of use have evidentiary support, we are developing educational materials for our website and will be adding information to our notices.

Building a searchable database of specimens: We are currently using reverse image searching to identify multiple applications with the same specimen of use bearing different marks. We are investigating additional IT solutions that would, for example, create a searchable database of specimens so that we can better detect when the same image has been used by multiple applicants.

Revising the specimen rule: The USPTO is planning to amend the trademark rule concerning specimens of use by setting criteria for electronic submissions in accordance with precedential case law for specimens of use, including requiring that webpages show the URL and access or print date. The amendments also will require that the specimen show use of the mark placed on the goods, on containers or packaging for the goods, or on labels or tags affixed to the goods.

Piloting programmes to allow third parties to provide evidence in examination and expedite inter partes non-use challenges: The USPTO has established a specimen protest email box to allow third parties to submit evidence that a particular specimen submitted in a pending application is digitally created or altered. Evidence submitted by third parties through the specimen protest programme has aided detection and examination of fake specimens. In addition, the Trademark Trial and Appeal Board (TTAB) has launched a pilot programme to determine under what conditions a cancellation proceeding for non-use or abandonment can be moved more efficiently to disposition through Accelerated Case Resolution. We are still collecting data on that programme.

Proposing incentives for accuracy: We plan to create some incentivising behaviors for registrants to ensure their registrations are and remain accurate regarding the goods and services for which the mark is in use without waiting until the maintenance filing to do so. For example, the USPTO is considering charging a ‘zero fee’ to file a request to delete unused goods/services outside of the Proof of Use Audit Programme or a TTAB proceeding. Furthermore, the USPTO is considering charging a fee to amend a registration when goods or services are deleted from a registration as a result of an audit or TTAB proceeding.

Work with Congress: The USPTO’s work to maintain the integrity of the trademark register is necessarily conducted within the limits of our statutory authority. Both of us have testified in Congress this year, and legislators appear to contemplate possible additional statutory tools. We would be happy to assist Congress should it decide to move forward with legislation that can help increase the accuracy and decrease the clutter of our trademark register.

The US trademark system is the world’s gold standard. It is a fundamental component of our economy and a driver of economic growth and job creation. The USPTO is committed to maintaining its integrity, and we call on all stakeholders to help us do so.

Andrei Iancu is under secretary of commerce for intellectual property and director of the USPTO and Mary Boney Denison is commissioner for trademarks at the office.

Trevor Little

Author | Editor

[email protected]

Trevor Little